Ex Parte Whitman et al

Board of Patent Appeals and Interferences

Jan 25, 2011

10099634 (B.P.A.I. Jan. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/099,634 03/15/2002 Michael P. Whitman H-PM-00020 (1800-20)
[114
4140
91478 7590 01/26/2011
Tyco Healthcare Group LP
555 Long Wharf Drive
Mail Stop 8-N1
New Haven, CT 06511
EXAMINER
SMITH, PHILIP ROBERT
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
01/26/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL P. WHITMAN, JOHN E. BURBANK, and
DAVID A. ZEICHNER
__________

Appeal 2009-014414
Application 10/099,634
Technology Center 3700
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL1

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-014414
Application 10/099,634

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STATEMENT OF CASE
The following claims are representative.
1. A flexible shaft, comprising:
a flexible, elongated outer sheath;
at least one drive shaft disposed within the outer sheath; and
a moisture sensor disposed within a coupling connected to an end of
the outer sheath configured to communicate sensor data corresponding to the
presence of moisture within the outer sheath.

37. A flexible shaft, comprising:
a flexible, elongated outer sheath;
at least one drive shaft disposed within the outer sheath;
a coupling detachably connected to an end of the outer sheath, the
coupling being configured to detachably couple to a surgical attachment,
wherein the coupling includes an engagement shaft including grooves and a
clip having flanges, the flanges being received in longitudinal slits of a
hollow engagement member of a surgical attachment, the engagement shaft
being received in the clip, the clip engaging the grooves; and
a moisture sensor disposed within the coupling configured to detect
moisture within the outer sheath.

38. A flexible shaft, comprising:
a flexible, elongated outer sheath;
at least one flexible drive shaft disposed within the outer sheath; and
a coupling connected to a distal end of the outer sheath configured to
couple to a surgical attachment, wherein the coupling includes a connection
mechanism configured to detachably couple to the surgical attachment,
wherein the connection mechanism includes an engagement shaft having
grooves and a clip having flanges, the clip being configured to be
received in a hollow engagement member of a surgical attachment, the
flanges of the clip configured to engage in longitudinal slits of the hollow
engagement member, the clip configured to receive and secure the
engagement shaft in the hollow engagement member, and to frictionally
engage with the grooves of the engagement shaft;
wherein the coupling further includes a moisture sensor.

40. A shaft, comprising:
an elongated outer sheath;
Appeal 2009-014414
Application 10/099,634

3
at least one drive shaft disposed within the outer sheath; and
a moisture sensor disposed within a coupling connected to an end of
the outer sheath configured to communicate sensor data corresponding to the
presence of moisture within the outer sheath.

Cited References

Noiles US 4,576,167 Mar. 18, 1986
Yabe US 4,654,701 Mar. 31, 1987
Tsuji US 5,402,769 Apr. 4, 1995
Shimizu et al. US 6,099,464 Aug. 8, 2000

Grounds of Rejection
1. Claims 1, 2, 7-9, 11, 12, 14-16, 19, 40-43, and 48-51 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Noiles in view of Tsuji.
2 . Claims 37-39 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Noiles in view of Tsuji.
3. Claims 3, 13, and 44 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Noiles in view of Tsuji and in further view of Shimizu.
4. Claims 4-6, 20, 21, and 45-47 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Noiles in view of Tsuji and in further view of Yabe.

FINDINGS OF FACT
1. With regard to claim 1: Noiles discloses:
a flexible shaft, comprising:
a flexible, elongated outer sheath (“outer shaft tube 60,” 13/4);
at least one drive shaft (“flexible band 80,” 8/45) disposed within the outer
sheath;
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Application 10/099,634

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a coupling (comprising elements “234,” “235,” “30,” “78,” “264,” “260,”
shown in Figure 11) connected to an endoscope of the outer sheath. (Ans. 4.)
2. The flexible shaft of the staple apparatus of Noiles transmits forces and
motions longitudinally between an actuator assembly and a remote stapling
assembly. (Col. 2, ll. 30-36.) The stapler of Noiles is mechanical and does
not function with electricity. The shaft of Noiles does not include electrical
components.
3. Noiles does not disclose a moisture sensor disposed within the coupling
configured to communicate sensor data corresponding to the presence of
moisture within the outer sheath. (Ans. 5.)
4. Tsuji discloses a “humidity sensor 22” and a “leakage detecting circuit
24” (4/49) which work in tandem to warn of leakage within an outer shaft of
an insertable medical instrument. (Ans. 5.) Tsuji further discloses humidity
sensor 94 within rigid endoscope 92a (Fig. 12; col. 11. ll. 5-59.)
5. Tsuji does not disclose a humidity sensor within a flexible coupling.
6. The Specification discloses that an electromechanical surgical device
includes a flexible shaft including a flexible elongated outer sheath, at least
one drive shaft disposed within the outer sheath; and a moisture sensor
disposed within the outer sheath configured to detect moisture within the
flexible outer sheath. (Spec. 24-27.) Figure 31 shows moisture sensor 990
within flexible shaft 20. (Spec. 39, ll. 27-35.)
7. According to the Specification, the presence of moisture within the
flexible shaft 20 may cause corrosion of the components of the flexible
shaft, for example the rotatable drive shafts and electronic or electrical
components arranged in the shaft. (Spec. 39, l. 33 to 40, ll. 4.).

Appeal 2009-014414
Application 10/099,634

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Discussion
ISSUE
The Examiner concludes that,
At the time of the invention, it would have been obvious to a
person of ordinary skill in the art to include a moisture sensor
such as that disclosed by Tsuji in the coupling disclosed by
Noiles. A skilled artisan would be motivated to do so in order to
enhance reusability by enabling sterilization, a necessary
precondition of reusability in surgical instruments.

(Ans. 5.)
Appellants argue that there is no apparent reason why one of ordinary
skill in the art would include a moisture sensor within the portion of the
Noiles device considered by the Examiner to constitute a coupling. (App. Br.
5.)
The issue is: Does the cited prior art teach a moisture sensor disposed
within a flexible coupling, as claimed?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
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Application 10/099,634

6
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.

ANALYSIS
Each of the rejections before us turns on the issue whether a moisture
sensor is disposed within a flexible coupling in the prior art. While Tsuji
discloses a moisture sensor in a rigid endoscope apparatus designed to
protect electrical components, it does not disclose a moisture sensor in a
flexible coupling. Further, the stapler of Noiles includes no electrical
components that would warrant inclusion of a protective moisture sensor.
Thus, we do not find that the Examiner has articulated any sound reason,
suggestion or motivation in the prior art to include a moisture sensor in the
flexible shaft of the surgical stapler of Noiles.

CONCLUSION OF LAW
The cited references do not support the Examiner’s obviousness
rejections 1-4, as the prior art does not disclose a moisture sensor disposed
within a flexible coupling.

REVERSED

cdc

TYCO HEALTHCARE GROUP LP
555 LONG WHARF DRIVE
MAIL STOP 8-N1
NEW HAVEN, CT 06511